Case: 22-166 Document: 17 Page: 1 Filed: 11/22/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: KNAUF INSULATION, INC., KNAUF
INSULATION SPRL,
Petitioners
______________________
2022-166
______________________
On Petition for Writ of Mandamus to the United States
Patent and Trademark Office in Nos. 90/014,801 and
90/014,807.
______________________
ON PETITION AND MOTION
______________________
Before LOURIE, TARANTO, and STARK, Circuit Judges.
STARK, Circuit Judge.
ORDER
Knauf Insulation, Inc. and Knauf Insulation SPRL (col-
lectively, “Knauf”) petition for a writ of mandamus to in-
struct the United States Patent and Trademark Office
(“PTO”) to terminate pending ex parte reexamination pro-
ceedings. Knauf also moves for a stay of the reexamination
proceedings pending review of its mandamus petition. The
PTO, as well as Johns Manville Corp. and Johns Manville
Inc. (collectively, “Johns Manville”), oppose the petition
and the motion. Knauf replies.
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2 IN RE: KNAUF INSULATION, INC.
BACKGROUND
Under the ex parte reexamination statutory regime, if
the Director determines that a petitioner has raised “a sub-
stantial new question of patentability” the Director may
“order . . . reexamination of the patent for resolution of the
question.”
35 U.S.C. § 304. In determining whether to in-
stitute reexamination, the Director “may take into account
whether, and reject the petition or request because, the
same or substantially the same prior art or arguments pre-
viously were presented to the Office.”
35 U.S.C. § 325(d).
In January 2015, Knauf sued Johns Manville in district
court, alleging infringement of eight patents, including
U.S. Patent No. 9,464,207 (“the ’207 patent”) and U.S. Pa-
tent No. 9,926,464 (“the ’464 patent”). In response, Johns
Manville filed numerous petitions for post-grant proceed-
ings to challenge the patents. With respect to the ’207 pa-
tent and the ’464 patent, Johns Manville filed petitions for
inter partes review (“IPR”) in 2018 that were not instituted
and requests for ex parte reexamination in 2020 that re-
sulted in confirmation of the patentability of the challenged
claims. In July 2021, Johns Manville filed two more re-
quests for ex parte reexamination of the ’207 and the ’464
patents presenting grounds that differed from the grounds
presented in the prior requests for post-grant proceedings.
The PTO determined that Johns Manville’s most recent re-
quests raised substantial new questions of patentability
and therefore ordered reexamination.
Knauf then filed petitions asserting that the decisions
granting the requests for ex parte reexamination should be
vacated pursuant to § 325(d) because the same or substan-
tially the same arguments had been raised in prior pro-
ceedings. Citing In re Vivint, Inc.,
14 F.4th 1342 (Fed. Cir.
2021), Knauf argued that Johns Manville had engaged in
undesirable, incremental petitioning, noting Johns Man-
ville’s prior petitions and requests for post-grant proceed-
ings. Knauf further argued that Johns Manville could have
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IN RE: KNAUF INSULATION, INC. 3
raised the prior art and arguments in its earlier petitions
and requests. Knauf also argued that some of the same
invalidity issues underlying these proceedings had been in-
itially raised by the examiner during prior reexaminations
brought by other requesters concerning the grandparent
application of the patents-at-issue.
On August 31, 2022, the Office of Patent Legal Admin-
istration (“OPLA”), acting on behalf of the Director of the
PTO, issued two decisions denying Knauf’s petitions. In
each decision, OPLA focused on the discretionary nature of
§ 325(d) and the specifics of what had been raised to the
PTO in prior proceedings and found that the prior art (and
associated arguments) presented in the present reexami-
nation proceedings were not the same or substantially the
same as those presented in Johns Manville’s prior petitions
and requests, and noted that these proceedings were the
first time any third party had presented the arguments
raised by Johns Manville to the PTO regarding these or any
related patent.
Knauf then filed this petition for a writ of mandamus
challenging the PTO’s decision and motions for a stay. We
have jurisdiction under
28 U.S.C. §§ 1651(a) and
1295(a)(4)(A). See Mylan Lab’ys Ltd. v. Janssen Pharma-
ceutica, N.V.,
989 F.3d 1375, 1379–81 (Fed. Cir. 2021).
DISCUSSION
A writ of mandamus is a “drastic and extraordinary
remedy” reserved for “exceptional circumstances.” Cheney
v. U.S. Dist. Ct. for D.C.,
542 U.S. 367, 380 (2004) (internal
quotation marks and citations omitted). A petitioner must
show that it has no other adequate means to obtain the de-
sired relief and has a “clear and indisputable” right to the
writ.
Id. at 380–81 (internal quotation marks and citations
omitted). And even when those two requirements are met,
the issuing court, in the exercise of its discretion, must still
be satisfied that the writ is appropriate under the
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4 IN RE: KNAUF INSULATION, INC.
circumstances.
Id. at 381. This demanding standard has
not been met here.
A post-final decision appeal is an adequate alternative
to obtain relief based on a § 325(d) challenge, making man-
damus inappropriate. See Vivint, 14 F.4th at 1350–54 (re-
viewing a § 325(d) decision on appeal from the Board’s final
decision); Automated Merch. Sys., Inc. v. Lee,
782 F.3d
1376, 1382 (Fed. Cir. 2015) (denying petition seeking to ter-
minate ongoing reexamination due to “adequate remedy”
of an appeal). Knauf argues that absent mandamus relief
it will be forced to engage in “unlawful” reexamination pro-
ceedings. Pet. at 26. However, “the burden of participating
in the proceedings at issue” is typically insufficient to es-
tablish entitlement to the exceptional remedy of manda-
mus where, as here, the issue may be reviewed in a typical
appeal. Automated Merch., 782 F.3d at 1382; see Cheney,
542 U.S. at 380–81 (“[T]he writ will not be used as a sub-
stitute for the regular appeals process.”); Bankers Life &
Cas. Co. v. Holland,
346 U.S. 379, 383–84 (1953) (noting
that the possibility of a “myriad of legal and practical prob-
lems as well as inconvenience” does not ordinarily warrant
mandamus).
Nor has Knauf shown a clear right to terminate the
reexaminations under § 325(d) based on this court’s deci-
sion in Vivint. In that case, we held, on direct appeal after
final decision, that the PTO had arbitrarily and capri-
ciously applied § 325(d) when it granted the requester’s
nearly identical petition for ex parte reexamination based
on the same arguments raised in a previous IPR petition
that was denied based on the requester’s abusive filing
practices. 14 F.4th at 1354. Here, the PTO made a case-
specific exercise of discretion that the prior art (and argu-
ments) were not the same or substantially the same as
those previously presented in other proceedings, which
does not create the same kind of clear, arbitrary departure
from prior PTO determinations that was at issue in Vivint.
And whatever the strength of the merits of Knauf’s § 325(d)
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IN RE: KNAUF INSULATION, INC. 5
challenge to that decision may be in an ordinary appeal, it
has not shown a clear and indisputable right to mandamus
relief.
Accordingly,
IT IS ORDERED THAT:
(1) The petition is denied.
(2) The motion for a stay is denied.
FOR THE COURT
November 22, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
